American Innovation at Risk: The New Congress Must Clarify Which Inventions Are Eligible for Patents

By Herbert C. Wamsley
December 19, 2018

The New Congress Must Clarify Which Inventions Are Eligible for PatentsThe U.S. Supreme Court has muddied the waters about patent eligibility in a way that threatens American innovation.  Capitol Hill is beginning to discuss this as a possible legislative issue for 2019.  Some would say it is as important as the intellectual property disputes in the tariff war with China.

In a recent speech at the Intellectual Property Owners Association (IPO) annual meeting, USPTO Director Andrei Iancu, the President’s principal advisor on intellectual property matters, challenged the Supreme Court’s interpretations of patent subject matter eligibility.

Iancu is right. In a series of opinions culminating in the Alicecase in 2014, the Supreme Court departed from 200 years of traditional U.S. patent law.  Ever since 1793, section 101 of the Patent Act and its predecessors made an invention patent-eligible, subject to other requirements, if it fell within the categories of process, machine, manufacture, and composition of matter.

In the Alice line of cases the Supreme Court established the two-part test for section 101 that has become notorious among patent attorneys:  (1) whether an invention is directed at an “abstract idea” or “law of nature,” and (2), if so, whether the invention includes an “inventive concept.” The Alice test has led to chaos in the patent world. The opinion comingles the test for patent eligibility under section 101 with tests under other sections of the statute such as novelty and nonobviousness.

Abstract ideas (which means mere ideas) and laws of nature per sewere ineligible already.  Patent attorneys are mystified byAlice’s addition of its “inventive concept” and “well-understood, routine, conventional” requirements, and they are appalled by the thought that judges might decide those issues without evidence.

Commentators have become so confused and intimidated by the Supreme Court that they speak of the “judicial exceptions” to section 101. Judges, of course, have no authority under the U.S. Constitution to make exceptions to legislation.  Alice is a judicial interpretation of section 101, not a judicial exception, and a very opaque interpretation at that.

Obama patent head David Kappos has said it is now easier to protect software-related inventions in Europe and Asia than in the U.S.  He doesn’t like it that China may be giving better protection than the U.S.   Pre-Alice, this would have been Alice in Wonderland talk.

Director Iancu said, “Whether through legislation or otherwise, there is a growing consensus that the issue must be promptly addressed.”   But not everyone is on board.  A representative of the High Tech Inventors Alliance, a group of eight large Internet, computer, and software companies, published an article applauding Alice!  The author said the court clarified that using generic technology to computerize abstract ideas like business methods does not make the ideas themselves patentable.  But earlier cases had already made that clear.

The High Tech Inventors Alliance claims to be afraid that any modifications to Alice will subject them to lawsuits by “patent trolls,” which they allege extort settlements by suing on extremely broad and low quality patents.

The Alliance argues that Alice must have clarified the law because the volume of troll suits declined after Alice, but the argument does not prove a causal relationship.  It is just as likely that Alice caused owners to lose confidence in their patents or that suits declined because the Supreme Court’s Octane Fitness decision the same year made it easier to recover attorney fees in frivolous suits.

Reliable information on troll abuse is hard to come by. A former chief patent counsel at Eastman Kodak Co. once said the only accepted definition of a patent troll is “someone you don’t like.”

Director Iancu addressed troll phobia in a speech to the Eastern District of Texas Bar Association in October, criticizing those who scare people about the patent system with troll stories.  He didn’t say trolls are “imaginary” as reported by one association.  He said, “Instead, let’s work together to find narrowly tailored measures to eliminate only the faults in the system while promoting the vast amount of innovation America is capable of.”

Director Iancu is working to develop clearer guidance for his patent examiners.  He is doing the right thing and should be commended.  Ultimately, however, any clarification of Alice by the USPTO or the lower courts must be supported by the Supreme Court or Congress.  The Supreme Court might be up to the job, given enough time, but it would take multiple cases and many years.  In the meantime, Alice is affecting not only computer software and business method-related inventions, but other critical inventions including medical diagnostic methods.

Two of the largest patent specialty associations – IPO and the American Intellectual Property Law Association (AIPLA) – have suggested draft legislative language to clarify section 101 that several other associations have now endorsed.  The language would circumscribe Alice by codifying the only permissible exceptions to the four categories of eligible subject matter and eliminating comingling of section 101 and other sections.  The language does not used the term “abstract idea.”  Do you know of any ideas that are not abstract?

Intellectual property legislation traditionally is nonpartisan, which may make it a little easier to find a solution.  All members of Congress will support preserving the patent system’s incentives for innovation if they understand what is at stake for the country.

Congress should schedule “Alice reform” hearings early in 2019 and amend section 101. It will be a big win for American innovation.

 

Image Source: Gene Quinn

The Author

Herbert C. Wamsley

Herbert C. Wamsley

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 47 Comments comments.

  1. Anon December 19, 2018 12:29 pm

    I have to wonder (tongue in cheek) whether the items of

    USPTO Director Andrei Iancu, the President’s principal advisor on intellectual property matters, challenged the Supreme Court’s interpretations of patent subject matter eligibility.

    or

    Commentators have become so confused and intimidated by the Supreme Court that they speak of the “judicial exceptions” to section 101. Judges, of course, have no authority under the U.S. Constitution to make exceptions to legislation. Alice is a judicial interpretation of section 101, not a judicial exception, and a very opaque interpretation at that.

    were “test[ed] against a common-sense understanding of the real world before you hit “Submit.”

  2. anony December 19, 2018 1:28 pm

    Great article; and I like the IPO’s suggestion:

    Sole Exceptions to Subject Matter Eligibility
    A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole (i) exists in nature independently of and prior to any human activity or (ii) is performed solely in the human mind. …

    But what is to prevent this Supreme Court (or Justice Thomas in particular) from sidestepping the suggestion? E.g.:

    Regarding intermediated settlement, even though the claimed invention as a whole is not performed solely in the human mind (E.g., Patent 5,970,479, claim 16), the claimed invention as a whole is directed to the abstract idea of intermediated settlement, which existed in nature (the human mind is part of nature that holds abstract ideas) independently of and prior to any human activity (the abstract idea is stored in the mind before taking action to perform the activity or to program a computer to perform the activity). Therefore, since the claimed invention as a whole is directed to an abstract idea that exists in nature independently of and prior to any human activity, the claimed invention is ineligible.

    This is the same style of argument provided by Justice Thomas in Alice. I.e., fabricate the “directed to an abstract idea” straw man and reject the claims over the straw man instead of the actual claim language.

  3. Night Writer December 19, 2018 4:10 pm

    >> Alice is a judicial interpretation of section 101, not a judicial exception, and a very opaque interpretation at that.

    I think the holding of Alice is that claims that fail the test in Alice were unconstitutionally granted. So what Alice is statutory interpretation in that it is limiting the scope of 101 with a direct tie to the Constitution.

  4. Pro Say December 19, 2018 4:24 pm

    Yes; the simple, logical IPO / AIPLA language would be very welcome.

    But — as anony’s posit demonstrates — the only way to keep SCOTUS once again slipping their collective noses under the 101 tent is to abolish 101 entirely.

    They can’t mangle that which does not exist.

    102, 103, and 112 handle all inventions just fine.

  5. Night Writer December 19, 2018 5:59 pm

    @4 They can’t mangle that which does not exist.

    Of course they can. There is no new version of 101 that I have seen including abolishing 101 that changes the holding of Alice. Proceed at your own risk my friends.

  6. Ternary December 19, 2018 6:06 pm

    Great article. This cannot be discussed enough.

    An invention that can be performed by a human, as in an abstract idea, is clearly also an invention. Why a patent cannot be bestowed upon such inventions is strictly a human decision. That is: there is no physical reason why such inventions do not deserve a patent. It is philosophically and epistemologically unclear why patent law and/or the patent clause imply that “abstract ideas” and “natural laws” should be excluded from patent eligibility.

    In fact, the patent clause explicitly says: “to promote the progress of science, … etc.” It is in that sense not credible for Justices like Thomas to claim that they are “originalists.”

    While I understand the tendency to patent only “material” inventions, it would be obvious for “originalists” to make all subject matters patent eligible that leverage and apply abstract ideas and laws of nature. That was how progeny of Enlightenment understood and wanted to develop “science and useful arts.” They felt that nature was hiding or obscuring useful applications of natural phenomena and abstract ideas and that humans had to be stimulated to discover, uncover and develop those applications. That stimulus was of course: a patent as a way to make money from an invention.

    Director Iancu is more of an “originalist” than some of the self-proclaimed “originalist” Justices, who seem to have no idea what an invention is, how R&D works and the role of patents and independent inventors in economic development. The great disappointment is that Justices appear more drawn to the interest of institutions and companies than the interest of the individual inventor. As “originalists,” these Justices should know that in the time of the patent clause no companies/institutions existed that did inventions. There were only independent inventors.

  7. Anon December 19, 2018 6:12 pm

    Night Writer @3,

    I think the holding of Alice is that claims that fail the test in Alice were unconstitutionally granted.

    We’ve gone over this (and you have stated that you agree with me, even though you also state the Court is doing something else):

    There is no such thing as “unconstitutionally granted” as YOU are using that term.

    The law is unconstitutional (or not). Patents granted under the law do not – and cannot – rise to being “unconstitutional.”

    If we keep permitting this type of nonsense and looseness in the meaning of the terms we use, we will never be able to draw attention where that attention needs be drawn: the scoreboard is broken.

    Pro Say @ 4,

    the only way to keep SCOTUS once again slipping their collective noses under the 101 tent is to abolish 101 entirely.

    Not so. There is a Constitutional power available to Congress called Jurisdiction Stripping.

    I believe that an upcoming EG article will delve more deeply into that option.

  8. Curious December 19, 2018 6:30 pm

    I think the holding of Alice is that claims that fail the test in Alice were unconstitutionally granted.
    Why do we have to tread this ground over and over again? Laws are unconstitutional — not patents. Also, the Supreme Court didn’t say that the claims of Alice were unconstitutional. Rather, the said that Alice was directed to an abstract ideas and patents to abstract ideas (i.e., “basic tools of scientific and technological work”) “might tend to impede innovation more than it would tend to promote it.” They didn’t even make an affirmative finding that the claims of Alice did impede innovation more than they promoted it. Rather, referred to “abstract ideas” in general and determined that they were going to throw out the baby with the bath water by deeming anything directed to an abstract idea as not being patentable subject matter (while conveniently and explicitly refusing to provide a definition as to what is mean by “directed to” an abstract idea).

    The substantive reference to the Constitution (regarding “promotion” of the useful arts) was couched within a wishy-washy statement as to something the Court thinks might be true. It was not a statement as to the particular claims being examined.

  9. anonymous December 19, 2018 7:01 pm

    The author’s link to Iancu’s speech is a link to a speech that says nothing about patent eligibility. Perhaps the link was to Iancu’s proposed guidance, discussed at https://www.ipwatchdog.com/2018/09/25/director-iancu-proposing-uspto-%C2%A7101-analysis/id=101682/

    New guidance on 101 can’t come soon enough. There are those of us presently caught in the 101 net and are struggling to get out. Hurry! These examiners aren’t close to reasonable, and they think themselves judges able to craft their own “judicial exceptions”.

    I still maintain that constructing new guidance is still a fool’s errand. Plager’s dissent in Interval Licensing says it best – “The ‘abstract ideas’ idea, when used for denying a claimed invention’s patent eligibility either before or after a patent is issued, cannot thus function as a valid rule of law.” Alice is not an interpretation of 101 whatsoever – it is impermissible judicial lawmaking, violating separation of powers. Not one word of 101 is “interpreted” in Alice, rather a “judicial exception” is conjured from thin air.

    Not only does 101 need to be amended in the manner suggested by IPO and AIPLA, but we need to go one step further. A patent should become incontestable, at least as it relates to patent eligibility, three years after it issues. That is, no patent shall be invalidated on 101 unless the issue is first raised for adjudication within 3 years from the issue date. As Gene often argues, title to a patent must quiet. At least Justice Bryer raised a similar point in the oral argument of Oil States, “do people gain a kind of vested interest or right after
    enough time goes by and they rely on it sufficiently . . . ?” The concept of patent incontestability ought to be on the table for discussion. Either that, or congress should consider tolling a patent’s term so long as it is tied up in litigation. Alleging patent ineligibility has become a routine and virtually ubiquitous litigation tactic, and it brings the PTO’s ability to competently examine applications into disrepute, harming the system as a whole. An efficient infringer would be given pause to raise a 101 invalidity defense if he knew the term would toll while the issue is litigated.

  10. Night Writer December 20, 2018 2:18 am

    >>hy do we have to tread this ground over and over again? Laws are unconstitutional — not patents.

    I said “unconstitutionally granted.” That means the law that granted them is unconstitutional because the claims “MAY tend not to promote.”

    This clearly is an issue of finding the boundary lines. (Also, just weird that you continually complain about this and try to dismiss the reference to the Constitution. As if a reference to the Constitution and saying that the granted claims may have a problem with the Constitution is not the basis of Alice.

  11. Night Writer December 20, 2018 6:37 am

    Are there Constitutional lawyers reading this? I can’t remember the cases, but it seems to me that I’ve read cases where the issue is whether the statute has portions that are Constitutional and portions that are not Constitutional. I think the SCOTUS has done this before. In Alice, they are saying the Patent Act moves into the unconstitutional area when claims of a patent fail the test outlined in Alice. I think the SCOTUS has done this in other cases.

    Again, it does not matter what is written for 101 or even if 101 is removed, it will not change the holding of Alice.

  12. Anon December 20, 2018 7:17 am

    Night Writer,

    As has been noted, “MAY” necessarily includes “may NOT.”

    You yourself indicate resting on a conjectural, subjective, projective (and thus LACK of present case or controversy) reach as a source of “authority.”

    Please recognize the brokenness of that reach.

  13. Anon December 20, 2018 9:14 am

    Night Writer,

    The way that you are phrasing your position is flawed.

    The interesting thing is that the position that you appear to want to take is that the law is unconstitutional — as applied (as opposed to being facially unconstitutional).

    As I and others have noted though, the Court has not properly established an “as applied” position.

    And the interesting part is that it is the Court that in their application has re-written the statutory law to be facially unconstitutional (for at least three reasons that I have provided in detail).

    We (the Royal “we”) must not shy away from telling the emperor that he (they) have no clothes on this issue.

  14. Night Writer December 20, 2018 11:11 am

    Anon,

    My position is sound and you are not summarizing correctly. The Scotus is saying that when claims like those in Alice are granted that the USPTO has gone beyond the Constitutional limits of the statute. I think there are other cases where the Scotus has done something similar to this. That is holding that the statute is Constitutional (the Patent Act), but some action that was taken under the Statute are not Constitutional.

    I think my position is sound. And I think it is how the justices interpret Alice too.

  15. Night Writer December 20, 2018 11:14 am

    And I get the whole “may tend”. I get it. Probably why the Scotus has been a little less than direct about this. They probably realize that you can’t test whether a set of claims will not promote for 100,000 sets of claims. So they set up a test and said if you fail this test, then we are going to hold that you fail to promote and the claims and the grant of the claims was unconstitutional.

    The key to thinking about Alice is that it is statutory interpretation where the holding is saying that the USPTO went beyond what the statute empowers them to do under the Constitution.

  16. Hturt Teller December 20, 2018 11:17 am

    Congress and the rules of law are owned by the ones with the largest bank roll. This all plays out for poor political theater and does nothing for the patent holder. As Germany and China tighten up their IP. America has decimated its patent system, thanks to Silicon Valley. Amazon, FB, Microsoft, Apple, Google have made them selves Trillions. Its long over due patent holders get.

  17. Anon December 20, 2018 2:16 pm

    My position is sound and you are not summarizing correctly. The Scotus is saying that when claims like those in Alice are granted that the USPTO has gone beyond the Constitutional limits of the statute.

    Sorry, Night Writer, but that sentence is – and remains – flawed.

    Claims cannot be “unconstitutional” – LAW may be unconstitutional.

    As I noted – it appears that what you are trying to say is that the law is unconstitutional as applied.

    The Court does not have the power to do as you are describing. Read again my posts above (which may have passed each other in crossing).

  18. Pro Say December 20, 2018 2:28 pm

    Anon at 7; in response to me at 4: “There is a Constitutional power available to Congress called Jurisdiction Stripping.”

    But — would such a stripping (an idea I agree with) moot or otherwise render invalid Alice / Mayo (noting also Night at 5: “There is no new version of 101 that I have seen including abolishing 101 that changes the holding of Alice.”)? What about Ebay? Oil States? All SCOTUS eligibility — and 102 / 103 — decisions? If so, how far back?

    Would such a change be retroactive (such that all those many folks who’ve had their patent rights ripped away would regain them)?

    In fact, would the IPO / AIPLA change be retroactive?

    A morass indeed.

  19. Anon December 20, 2018 4:07 pm

    Night Writer,

    Not to pick on you (per se), but your comment of:

    And I get the whole “may tend”. I get it. Probably why the Scotus has been a little less than direct about this. They probably realize that you can’t test whether a set of claims will not promote for 100,000 sets of claims.

    shows that you do NOT “get it.”

    This is NOT a situation of whether or not “can’t test” based on volume of claims.

    ALL claims must be properly evaluated under the law. Your view here ‘too many claim sets’ is not sustainable on its face.

    Additionally, the notion of “has been a little less than direct” has a DIRECT impact on the law that we are discussing. This is why I state that the Court has not (properly) provided the “as applied” analysis (which is one of the only two analysis that CAN be provided for ANY holding dealing with Constitutional issues). I will note that THIS avenue is the best avenue to take for anyone wanting to defend what the Court has done.

    Lastly, and certainly not a minor item, is the nature of the term itself. If you really did “get it,” you would have recognized that “May” is an admission that the Court is acting outside of its (implicated) authority. That term is presupposing some future effect that has not come to pass, that cannot — with any certainty — be projected TO occur. This is worse than a pure straight-up advisory opinion because it is making a conjectural, subjective, prospective “legal finding” on future facts that cannot make up a PRESENT case or controversy, because it is obfuscating what it is doing.

    This is nothing more than a “I know it when I see it and I do not like these claims” type of policy “Ends” statement.

    There is NO tie to any type of “misapplication” of the written word of Congress.

    When one applies critical thinking to the scrivining of the Court, that scrivining does not (and cannot) hold up to scrutiny.

    Further still, the notion that you have advanced – that the Court would apply this holding NO MATTER WHAT (even if 101 was removed) should more than tell you that this “holding” has nothing to do with ANY law written by Congress.

    And that is a clear sign of ultra vires law writing by the WRONG branch of the government.

  20. Anon December 20, 2018 5:33 pm

    Pro Say @ 17,

    To your questions of “But — would such a stripping (an idea I agree with) moot or otherwise render invalid Alice / Mayo [_]? What about Ebay? Oil States? All SCOTUS eligibility — and 102 / 103 — decisions? If so, how far back?

    No. Jurisdiction stripping does not “moot” or undo damage already rendered unto the law.

    Note that the aim of the patent bars is different – and IS a (more) direct renunciation.

    BOTH active renunciation AND jurisdiction stripping is advisable.

    I would also go one further: given that the CAFC has been browbeaten into merely kowtowing (or worse) the monstrosities perpetrated unto patent law by the Supreme Court, I would also desire Congress to provide a new and reset Article III body to provide the “final word” on patent law appeal matters.

    Since you are evidently not an attorney, I would recommend that you discuss with one the case of Marbury, which early on in this country established the power of judicial review (noting that THAT case did NOT call out for “Supreme Court” judicial review, but instead called out for Article III court judicial review.

  21. Night Writer December 20, 2018 6:21 pm

    >>Claims cannot be “unconstitutional” – LAW may be unconstitutional.

    Why do you keep saying this over and over again? I have told you that I didn’t say the claims were unconstitutional. I said that the granting of the claims was unconstitutional. The act of granting. And yet you continually go to the nouns of the claims.

    You really are just not getting it.

  22. Night Writer December 20, 2018 6:27 pm

    I get all your arguments Anon, but I think the reality is that Alice is not horrendous. It seems in line with the type of stuff the Scotus does.

    I get you think that some claims could not tend to promote and that would be fine. I get all your arguments.

    Actually, I think understanding Alice as I do provides a clear path for the CAFC to cabin Alice.

  23. anonymous December 20, 2018 6:40 pm

    101 could surely be amended in a manner that eliminates Alice, or all judicial exceptions.

    For example, “Patent eligibility shall not be negatived by any judicial exception or for any reason not specified in 35 USC 101.”

  24. Curious December 20, 2018 8:52 pm

    That means the law that granted them is unconstitutional because the claims “MAY tend not to promote.”
    So … 35 USC 101 is unconstitutional? Why is it still being applied?

    Winning and losing at the Court is oftentimes about how you frame the issue. Framing the issue as the patents being “unconstitutionally granted” or “the law that granted them is unconstitutional” is a non-starter.

  25. Curious December 20, 2018 9:00 pm

    Actually, I think understanding Alice as I do provides a clear path for the CAFC to cabin Alice.
    Except you are the only person I’ve read who describes Alice as such.

    Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce,’ ” ibid., and the use of a third-party intermediary (or “clearing house”) is a building block of the modern economy. Thus, intermediated settlement, like hedging, is an “abstract idea” beyond §101’s scope.
    The CAFC could have EASILY cabined Alice, based upon this statement alone, to fundamental economic practices long prevalent in our system of commerce. They did not. If the CAFC was even remotely interesting in limiting Alice to a certain set of facts, they had an opportunity to do so. That is not path they wanted to walk down. Rather, they were walking down a path in a forest with a flamethrower strapped to their back — looking to destroy anything they encountered.

  26. Anon December 20, 2018 11:28 pm

    didn’t say the claims were unconstitutional. I said that the granting of the claims was unconstitutional.

    That granting is by the same mechanism as any other granting.

    If you are trying to make a Constitutional argument in the “as applied” manner, you are failing miserably.

    If you don’t understand how to make a Constitutional argument, I would advise you to learn before you try again.

  27. concerned December 21, 2018 5:00 am

    Curious @ 24:
    The CAFC could have EASILY cabined Alice, based upon this statement alone, to fundamental economic practices long prevalent in our system of commerce. They did not. If the CAFC was even remotely interesting in limiting Alice to a certain set of facts, they had an opportunity to do so. That is not path they wanted to walk down. Rather, they were walking down a path in a forest with a flamethrower strapped to their back — looking to destroy anything they encountered.

    ………..Least it swallow all of patent law. Yet the SCOTUS sits idle and watches this swallowing of all patent law by lower courts and examiners that expand on their Alice ruling.

    The whole process is disingenuous from a group of jurist and examiners that are charged with promoting innovation by the constitution.

  28. Night Writer December 21, 2018 5:38 am

    Curious—No one that is a thought leader in patents thinks my interpretation of Alice is wrong or unreasonable. And, your example of how to cabin Alice is, of course, ridiculous. That would not be a way to cabin Alice that would hold up. Plus, your arguments are just strange. Your argument seems to be that some clique of people that you know don’t think like this so it is wrong. That is not a legal argument.

    Anon–You need to learn to spend some time reading what other people write. My Constitutional argument regarding Alice is sound and consistent with Scotus precedent.

  29. Night Writer December 21, 2018 5:45 am

    >>Framing the issue as the patents being “unconstitutionally granted” or “the law that granted them is unconstitutional” is a non-starter.

    And you think this why? And again you play the strawman game. I haven’t said that 101 is unconstitutional, but that the act of granting claims that fail the Alice test as being unconstitutional.

    Curious you are odd person. I’ve had these conversations with the top people in patent law. Not one has said that my interpretation is wrong or way out there. Plus it is just odd that you keep saying the same thing over and over and yet never address the substance of my argument. You never address the words of Alice that I’ve quoted.

    You also just say it doesn’t matter. That there are just these magical exceptions to 101 and where they come from doesn’t matter. Read Alice. Obviously the Scotus cares where the basis for the exceptions come from or they wouldn’t have spent the time to tie the “exceptions” to the text of the Constitution.

    I get that you have some little group of people that you talk with that feel they are in the know.

  30. Night Writer December 21, 2018 6:25 am

    In fact one way to cabin Alice is for the lower courts to look at evidence that sets of claims or types of claims do promote innovation.

  31. Anon December 21, 2018 7:55 am

    My Constitutional argument regarding Alice is sound and consistent with Scotus precedent.

    First, you have not made a cogent Constitutional argument.

    That you don’t recognize this is perhaps your largest impediment to making any sense whatsoever.

    Second, that you think what the Supreme Court has done in Alice is not only NOT a problem, but is sound, shows that you have no understanding of the issues on the table.

    You have engaged no critical reasoning in your rubber stamping of what the Supremes have done.

    Again, the “as-applied” is the best angle to try to make a Constitutional argument — but you are not even close to getting there.

  32. Anon December 21, 2018 8:30 am

    “Do promote” is not legally necessary to defeat a “may not promote” position.

    You say that you “get” the counter to the “May” issue, but you show NO appreciation of that counter.

    Maybe instead of merely mouthing that you “get it,” show your understanding by integrating that understanding into what you actually post (instead of ignoring the infirmity).

  33. Anon December 21, 2018 8:35 am

    Night Writer,

    Am I reading this correctly:

    Curious—No one that is a thought leader in patents thinks my interpretation of Alice is wrong or unreasonable.

    Your interpretation is eminently unreasonable because what you are doing is ONLY saying what the score on the broken scoreboard is, and you are not engaging (in any sense of thought leadership) on the necessary problem of a broken scoreboard.

    I am not the one here that needs to focus on the ongoing dialogue. You are way behind the game with your surface reflections.

  34. Anon December 21, 2018 11:35 am

    A bit off-topic, but there is yet another cringe-worthy CAFC panel decision in the evolution (even as that panel decision is being labeled nonprecedential) of the “new” Common Law law writing of 35 USC 101 in the Glasswall decision.

  35. Curious December 21, 2018 11:46 am

    And, your example of how to cabin Alice is, of course, ridiculous. That would not be a way to cabin Alice that would hold up.
    Someone who has a pretty good reputation on this blog once told me (and I’m paraphrasing), “when you are making an argument before the court, either explain why your facts are the same [as a prior court decision] or explain why your facts are different.” In Alice, SCOTUS stated that the facts of Alice were essentially the same as the facts of Bilski, which is why the patent was determined to be directed towards an abstract idea. The EASY argument is to use the same logic employed by SCOTUS to explain why your facts are either the same (or different) than the salient facts in Alice/Bilski (i.e., a fundamental economic practice long prevalent in our system of commerce).

    That means the law that granted them is unconstitutionalI haven’t said that 101 is unconstitutional
    Make up your mind.

    Curious you are odd person. I’ve had these conversations with the top people in patent law. Not one has said that my interpretation is wrong or way out there.
    Top people huh? So you say. I’m just saying that I haven’t read anybody (other than you) take the position that you are taking. Of course, if you are willing to provide a cite as to other people taking this same position, I will stand corrected.

    You never address the words of Alice that I’ve quoted.
    What words were these that you quoted? While you are at it, identify the comment # that you included this quote.

    Obviously the Scotus cares where the basis for the exceptions come from or they wouldn’t have spent the time to tie the “exceptions” to the text of the Constitution.
    You mean this statement … “might tend to impede innovation more than it would tend to promote it” … that SCOTUS pulled out of their nether regions? That statement along with the “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case” are probably the two worse statements in Alice. The first is an unsupported pseudo finding of fact and the second is a shirking of the duty of SCOTUS to interpret the law (actually, it is their own law that they are interpreting since “abstract idea” is not found in the statute). SCOTUS makes up their own exception to statutory law but doesn’t think it is important to define one of the key definitions within that exception.

  36. Anon December 21, 2018 12:56 pm

    Absolutely correct, Curious.

    As I pointed out to Night Writer (somewhere in this current series of 101 related threads), if one is going to want to play the “Constitutional” card, for every one attempt at aligning what the Court did with a “Constitutional” ground, I can (and have) given three counter Constitutional infirmities of what the Court is doing.

    And, as I have pointed out here, no one as yet (thought leader or otherwise) has provided a cogent Constitutional basis of an “as applied” case (primarily because the Court itself has failed to do so). So even the best possible path for anyone advancing any type of “correctness” in what the Court is doing is a path not yet taken.

    Critical thinking of – and holding the Court accountable to – merely mouthing words of the Constitution does NOT a proper Constitutional position make.

    Which leads me (again) to stress that the real issue here is that the scoreboard is broken.

    ANY position being advanced that does not reflect that larger issue is immediately suspect (and from an objective legal point of view, immediately of questionable cogency).

  37. JTS December 21, 2018 9:41 pm

    No statute empowers the Supreme Court to make patentability decisions by deciding whether a patent does more harm than good. That is a judgment that should be reserved for Congress. The Supreme Court is in no position to say whether a patent takes more from the public than it gives. For that matter, is there any need for such an approach? We are talking about a system, and net benefit for the public should be examind from that level. we have an expansive section 101, that might create some unsavory patents, but how many other beneficial patents does it foster? And if they were so concerned with the public good, why did they not consider the quid pro quo patentees went through during the application process? Where did the Supreme Court, in Alice, weigh the cost of retroactively invalidating thousands of patents? In law schol I saw a fallible but generally principled Supreme Court of the past. As an attorney, I see just another political body … I mean, you don’t have to be an attorney to read Alice and see utter nonsense.

  38. Night Writer December 22, 2018 5:30 am

    It can’t be clearer that the Scotus ties their exceptions to the text of the Constitution. All the exceptions are tied to “promote” or not promote. Curious–you use strawmen and your position is just odd in that you claim the exceptions appear magically when the Scotus makes it clear tie to the Constitution. Anon–just read Alice. The key to thinking about this is that the Scotus does feel a need to tie this to the Constitution.

    https://scholar.google.com/scholar_case?case=7784134755284986738&q=alice+supreme+court&hl=en&as_sdt=6,39

    The magically appearance — “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”

    The tie to the Constitution — We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

  39. Night Writer December 22, 2018 5:34 am

    The big picture is that the justices are simply way out of their depth in even thinking about patents. They have no clue whatsoever about science, technology, innovation, business, etc. They are like little tyrant babies that proclaim what they want and what is. The below statement is perhaps one of the most ignorant and vile statements ever made against innovation. Business methods and computers are a natural for synergy with new and creative methods.

    Justice SOTOMAYOR, with whom Justice GINSBURG and Justice BREYER join, concurring.

    I adhere to the view that any “claim that merely describes a method of doing business does not qualify as a `process’ under § 101.”

  40. Night Writer December 22, 2018 2:56 pm

    >>We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

    This, by the way, might be the most da mning statement in Alice. It illustrates clearly that the Scotus is acting out of policy.

  41. concerned December 23, 2018 1:57 am

    JTS @ 37: In law school I saw a fallible but generally principled Supreme Court of the past. As an attorney, I see just another political body … I mean, you don’t have to be an attorney to read Alice and see utter nonsense.

    I am not an attorney and you are correct: I can see the utter non-sense.

    I will share this fact. I was the liaison between my agency and the State Attorney General. I referred approximately 100 cases to the AGO and never lost a case. I would read the contract/policy at issue and make the determination whether our Agency would proceed to refer the case.

    Patent jurisprudence is no where close to what I experienced in my government career. I now read s101, the MPEP and court decisions and there is no rule of law whatsoever. Everyone does as they please from SCOTUS right down to the examiners.

    In my patent prosecution, the examiner denied using rationale that is not factual, not truthful and is illogical on the surface. I would have been embarrassed to act in such matter in my previous career. The whole process is a sorry joke for something so important to commerce and a total disgrace in serving the public.

  42. Anon December 23, 2018 11:04 am

    concerned,

    To your point I would add that the case is worse for those attorneys (and members of the various branches of the government) who should know better and yet seek to “promote” the type of LACK of Rule of Law that we see in regards to the state of 101.

  43. Curious December 23, 2018 8:57 pm

    NWPA @38. You didn’t answer the specific question(s) I asked @35. What was the specific language you quoted and in what comment can I find this quote?

    Curious–you use strawmen and your position is just odd in that you claim the exceptions appear magically when the Scotus makes it clear tie to the Constitution.
    What strawmen have I constructed? The exceptions do magically appear. You cite the language that proves the point: “We have long held that this provision contains an important implicit exception” “Implicit” means understood but not expressed. SCOTUS is creating something out of nothing — that is the hallmark of a good magic trick. Another word for this is “judicial activism” — the know, a judicial philosophy considered opposed to strict constructionalism.

    While SCOTUS does attempt to tie their logic to the Constitution, JTS @37 has it perfectly correct — it is not the job of SCOTUS to make policy decisions as to whether patents on certain things “might tend to impede innovation more than it would tend to promote it.” That is the job of Congress. They should be the ones that hold hearings and make findings as to this issue. SCOTUS has NO EXPERTISE to make findings as to whether or not a certain class of patents impedes innovation more than promote it. They are making policy while masquerading as “interpreting” the Constitution.

    All that being said, your posts @39 and @40 are spot on.

  44. Night Writer December 24, 2018 10:11 am

    @43 Curious

    “While SCOTUS does attempt to tie their logic to the Constitution”, kind of finally admitting that, huh? They don’t kind of tie their logic to the Constitution. They are very careful to tie the exceptions to the text of the Constitution.

    >That is the job of Congress. They should be the ones that hold hearings and make findings as to this issue. SCOTUS has NO EXPERTISE to make findings as to whether or not a certain class of patents impedes innovation more than promote it.

    Yes, Curious that is right. And I have been saying this since Alice came out. And I have been saying that one way to attack Alice is for lower courts and Congress to hold that patents that fall within Alice do tend to promote.

    You have finally started to understand. I think I had to quote Alice so you would actually read it.

  45. Anon December 24, 2018 9:36 pm

    Night Writer,

    You have misunderstood the reply to you.

    Your wanting others to (merely) read the case still does nothing to address the fact that the score board is broken.

    You also still have not formulated an actual Constitutional argument — nor do you realize that the Court has not yet presented one either (merely mouthing words of the Constitution is NOT sufficient).

  46. anony December 28, 2018 12:22 pm

    Here is another way to go with 101:

    Current 101:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    Proposed 101:
    Any patent granted in accordance with the conditions and requirements of this title (e.g., sections 102, 103, and 112) shall be enforceable against any infringing process, machine, manufacture, composition of matter, or improvement thereto made with the intellect of man. The burden of eligibility is hereby extinguished for patents per se and is placed solely onto the infringing processes, machines, manufactures, compositions of matter, and improvements that are alleged by a patentee in an infringement lawsuit. Use by an entity with less than one million dollars in revenue per annum and that is for research or educational purposes shall be protected by an affirmative defense of fair use.

    Thoughts:
    With this change, all patents are intrinsically eligible. However, patents can only be enforced against processes, machines, manufactures, compositions of matter, and improvements thereto so that someone cannot be sued for “thinking about” the idea or for having DNA inherited from their parents (even if the parents’ DNA was altered so as to be ‘made with the intellect of man’). Software that reports the results of medical diagnostics is enforceable on the computers and programs that provide the results. Claims to programs that receive, process data, and display the results are also enforceable. A fair use exception is provided for research and education (by small entities to prevent large entities from abusing this defense).

  47. Anon December 29, 2018 12:46 pm

    anony,

    I do not see how your suggestion would work in practice.

    All that you have done is shifted the (broken) score of the broken scoreboard to a different point of time on enforcement. That resolves nothing.

    Further, I bristle at your introduction of a “Fair Use” element. I reject outright the expansion to “small entity infringement.” Such has no place in patent law. We do not need to add more manners of efficient infringement and to worsen what is (and should be) a “no mindset required” of infringement (much like trespass does not require a sense of knowing that the land you are trespassing on belongs to someone else). Your “Ends” of “abuse by large entities” is NOT abuse, but merely part and parcel of what patents entail. It should make no matter whatsoever to the power of the patent right as to the type of entity (size) of the holder of that right. Your attempted insertion is thus a type of “nose of a camel under the tent” and simply has no place in patent law. Exclusive means just that – and is NOT a function of who holds the exclusive right.

    And the “research or education” element need not be integrated, as those exceptions are already well recognized.

    You actually do NOT reach your desired “with this change, all patents are intrinsically eligible” position. While you state that “burden of eligibility is hereby extinguished for patents per se, you have NOT extinguished the burden as much as moved it. This movement will serve to simply re-locate the broken score board ideologies (and NOT truly extinguish them).